Designs
Aldi’s Gin bottle found to infringe Marks & Spencer’s registered designs
March 23, 2023
Aldi’s practice of selling own-brand products reminiscent of branded products leads to occasional intellectual property disputes with brand holders. In this case, Aldi’s dispute with M&S was not about trade marks or passing off but about the design of products themselves, namely gin bottles. This is not the first dispute Aldi has had with M&S regarding product designs (remember Colin v Cuthbert the Caterpillar?).
In Autumn 2020, M&S introduced a striking bottle design for their gin-based liqueur. The bottles are festively decorated and the liqueur contains gold flakes. An LED light is attached to the bottom of the bottle to illuminate the contents.
Aside from the quality of the gin itself, a key attractor for customers would have been the illuminated snow globe impression given by this design. Therefore, my outside view is that it was a good idea for M&S to register this bottle design, which is what they did. Indeed, patents, registered trade marks, passing off rights, or copyright may not have been possible or sufficient. Some images from M&Ss registered designs are shown below:
The following Christmas (2021), Aldi launched a competing gin product producing the same illuminated snow globe impression, including the LED light fixed to the bottom of the bottle:
According to this judgment, M&S has successfully taken action against Aldi for registered design infringement, via the Intellectual Property Enterprise Court (IPEC). IPEC is a court for efficiently dealing with medium-size intellectual property disputes, with caps on damages and costs.
Although the court considered that M&S’s registered designs were not the first examples of a snow globe-like bottles, they nonetheless protected several distinctive features which Aldi had incorporated in their design.
The court noted the similarities and differences between Aldi’s bottle and the registered designs, and gave additional weight to those features which would appear significant to the ‘informed user’.
Significant similarities: |
Differences: |
(1) The identical shapes of the two bottles. |
(1) Aldi’s bottle features some colour and the stag and doe from the M&S registered designs are absent. |
(2) The identical shapes of the two stoppers. |
(2) Aldi’s bottle has “Infusionist” branding which the registered designs do not have. |
(3) A winter scene over the entirety of the straight portion of the bottle side, consisting entirely or mostly of tree silhouettes. |
(3) Features (1) and (2) give Aldi’s bottle a ‘front’. |
(4) A snow effect. |
(4) Aldi’s winter scene is brighter and busier. |
(5) An integrated light. |
(5) Aldi’s stoppers have a watch strap label with the Aldi logo on top. |
(6) Aldi’s stoppers are darker in shade. |
Although the number of specific differences outweighed the similarities, the judgment found that the differences were too minor to change the overall impression of Aldi’s design.
This judgment demonstrates an important advantage of registered designs, which is that infringement is based on the overall impression, which provides a much broader scope of protection than having to prove slavish copying.
This judgment therefore demonstrates how UK registered designs can be an effective tool for protecting product designs.
Tim Gilbert
IP Director